Wednesday, November 21, 2007

Distributor, Not Manufacturer, Owns "VISAGRAPH" Mark, Says TTAB

The issue of ownership of a mark, as between the manufacturer and the exclusive distributor of a product, is "a matter of agreement between them, and in the absence of an agreement, there is a legal presumption that the manufacturer is the owner of the mark." But in a recently-decided opposition, the facts clearly established that the distributor is the owner of the mark VISAGRAPH for eye movement recording devices. Compevo AB v. Taylor Associates Communications, Inc., Opposition No. 91161524 (October 24, 2007) [not precedential]. [TTABlog note: Curiously, the Board throughout its opinion refers to the mark as VISIGRAPH rather than the correct VISAGRAPH].

"Applicant had preexisting rights to the VISAGRAPH mark before it contracted with opposer to purchase opposer's eye movement recording device. Thus, applicant had established goodwill in the VISAGRAPH trademark before purchasing products from opposer;

Opposer affixed the VISAGRAPH mark to the eye movement recording device at the request of applicant;

Opposer sold the VISAGRAPH eye movement recording device in the United States solely to applicant; and

Applicant markets the VISAGRAPH eye movement recording device under its own trademark as applicant's VISAGRAPH eye movement recording device. Thus, the relevant consumers associate the VISAGRAPH eye movement recording device with applicant. The statement on the packaging that identify [sic] opposer as the manufacturer and applicant as the distributor does not overcome applicant's marketing efforts to identify applicant as the source of the VISAGRAPH eye movement recording device."

Based on the evidence, the Board was convinced that the parties "were operating with the understanding that applicant was the owner of the VISAGRAPH mark." [TTABlog query: is the understanding of the parties that important? Isn't the understanding of the consuming public the paramount issue?]

The Board therefore dismissed the opposition.

TTABlog note: For a comprehensive discussion of the issue of ownership of a trademark in various scenarios, see Pamela S. Chestek's article, "Who Owns the Mark? A Single Framework for Resolving Trademark Disputes", in the May-June 2006 Trademark Reporter (pdf here).